Enliven Your Merdeka Spirit but Not in Your Trademark

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    Enliven Your Merdeka Spirit but Not in Your Trademark

    Trademarks are particularly a valuable type of Intellectual Property asset because it associated closely with your business brand image. This explains why most business owners, despite the cost, rush to register their Trademarks on their own and accidentally overlook some crucial details that could have been avoided. This include the incorporation of any flags or national insignia in the Trademark that shall be rejected by the IP office.

    In the flurry of Merdeka celebration, Patriotism is a fierce and special feeling, and for businesses too, they proudly display the crescent, stars, and stripes in their logos and promotional materials which is prohibited. A part of the solid design of State emblem, a stylized design of the national insignia could also leave a Trademark application open to rejection.

    Article 6ter of the Paris Convention for the Protection of Industrial Property clearly stated that “the Registrar is under an obligation to refuse to register any mark which consists of, or contains, the armorial bearings, flags or other State emblems of countries”.

    The law is not recent and prevalent in most countries. The official bodies and institutions will have full autonomy on the exclusive rights of Marks which consists of, or contains, the armorial bearings, flags or State emblems.

    There was a case happened in Poland where the Supreme Administrative Court (NSA) of Poland confirmed that a Trademark containing a representation of a white eagle similar to the Polish national emblem (as shown below) could not be registered. According to the Constitution, Article 28(1), stipulates that the image of a crowned white eagle upon a red field shall be the national emblem of the Republic of Poland which displays the image of a white eagle with a gold crown on his head turned right, with unfolded wings and gold beak and claws, on a red field.

    Another example involves an applicant who desired the mark to be registered as a Community Trademark but was refused by the examiner due to the symbol that consists of an image of a maple leaf with the letters ‘RW’, in capitals (right figure), stating that the sign gave rise to an impression on the part of the public that it was linked to Canada (left figure). Canada is a member of the Paris Convention, and the emblems are protected under Article 6ter of that Convention.

    In the Malaysian context, pairing stars and crescents in their logo design that mimics the actual emblems or flags will certainly be rejected. This includes but not limited to the word “ASEAN”, “armorial bearings”, or insignia.

    Some of many elements that cannot be registered as a Trademark is as follows:

    In any case,  if Trademark owners have any doubts whether the Trademark they are using or intend to use is contrary to the law, professional advice should be sought immediately.

    Having passed on these words of advice, we hope everyone can now celebrate the upcoming Merdeka Day with more freedom, independence, and less worry. Exy IP wishes you a very Happy Malaysia Independence Day!

    This article is brought to you by Exy IP PTE. LTD.

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